ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company ("GEICO") v. Domain Administrator, Fundacion Privacy Services LTD Case No. D2022-3196 1. The Parties The Complainant is Government Employees Insurance Company ("GEICO"), United States of America ("United States"), represented by Burns & Levinson LLP, United States. The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar The disputed domain name is registered with Media Elite Holdings Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2022. On August 30, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 27, 2022 The Center appointed C. K. Kwong as the sole panelist in this matter on October 11, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. page 2 4. Factual Background The Complainant is an insurance provider who has provided its insurance services throughout the United States. It is the owner of numerous trademarks embodying or comprising the word "GEICO". These registrations include: (a) United States Trademark Registration No. 0763274 for the mark GEICO filed on December 6, 1962, and registered on January 14, 1964, with first use in commerce claimed from 1948 in respect of services in International Class 35 and 36 (Annex 3 to the Complaint); (b) United States Trademark Registration No. 2601179 for the mark GEICO filed on January 25, 2001, and registered on July 30, 2002, with first use in commerce claimed from December 31, 1948, in respect of services in International Class 36 (Annex 3 to the Complaint); (c) International Trademark Registration No. 1178718 for the mark GEICO registered on September 4, 2013, in respect of services under International Class 36 (Annex 3 to the Complaint). The uncontested evidence produced by the Complainant shows that the registrations of its aforesaid GEICO mark occurred many years before the registration of the disputed domain name by the Respondent on August 17, 2022. Other than the particulars shown on the printout of the database search conducted by the Complainant of the WhoIs Database (as provided in Annex 1 to Complaint), the website to which the disputed domain name resolves (as provided in Annex 7 to the Complaint) and the WhoIs Database search results, there is no evidence in the case file concerning the background of the Respondent and its business. At the time of filing of the Complaint, the evidence provided by the Complainant shows that the disputed domain name resolved to a website, which hosts pay-per-click hyperlinks to other insurance-related websites. 5. Parties' Contentions A. Complainant The Complainant has over 43,000 employees. It has over 18 million policies and insures more than 30 million vehicles. The Complainant maintains various social media accounts under its GEICO mark, including Facebook, Twitter, Instagram, TikTok, YouTube, and Linkedln, each of which has tens of thousands and in some cases millions of followers. It has established a sophisticated and interactive website at "www.geico.com" to promote and sell its insurance services. The disputed domain name incorporates the Complainant's GEICO trademark entirely adding only the generic or descriptive terms "saves" and "lives" and generic Top-Level Domain ("gTLD") ".com". The disputed domain name currently resolves to a parked website, which displays a series of pay-per-click advertisements about car insurance that leads Internet users to competing third-party websites. The disputed domain name attracts Internet users and consumers looking for the Complainant's services to Respondent's webpages. There is no evidence that the Respondent has any legitimate claims to the disputed domain name. The unauthorized use of the disputed domain name by the Respondent harms the Complaint's trademark and business. page 3 The Complainant has trademark rights in the mark GEICO. The disputed domain name is identical or confusingly similar to the Complainant's GEICO trademark. There is no evidence that (a) the Respondent's use of or demonstrable preparations to use, the disputed domain name relates to a bona fide offering of goods or services, (b) the Respondent is commonly known by the disputed domain name or (c) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Complainant has not authorized the Respondent to use its GEICO trademark in any form. The Respondent has no rights in and cannot be conducting any legitimate business under the disputed domain name nor could it possibly legitimize its incorporation of the GEICO trademark into the disputed domain name. GEICO is one of the most recognizable insurance brands in the United States and throughout the world. The Respondent's use of the disputed domain name to profit from the Complainant's reputation suggests that the Respondent's intent in registering the disputed domain name was to profit or otherwise exploit the Complainant's GEICO trademark in bad faith. There is no conceivable contemplated use of the disputed domain name that would not be a violation of the Complainant's rights. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Notice of Proceedings The contact details of the Respondent and the disputed domain name were fully set out in the publicly available WhoIs search results provided in Annex 1 to the Complaint and the WhoIs search results on September 6, 2022 ("the Data Base Records"). Such contact details in the Data Base Records also match with the answers to the Request for Registrar Verification provided by the Registrar to the Center on September 5, 2022. On September 6, 2022, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint including annexes to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded the Written Notice of the Proceedings in accordance with the relevant contact details to the Respondent by courier. The Panel finds that as long as the Center has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Data Base Records, its obligations of such communications will be discharged. The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center. page 4 B. The Three Elements In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, "[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 14(b) of the Rules further provides that, "[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate". Paragraph 5(e) of the Rules further provides that, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint". The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. The said three elements are considered below. 1) Identical or confusingly similar On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark GEICO by reason of its trademark registrations as recited in Section 4 above. Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark GEICO despite the addition of the words "saves lives". The disputed domain name incorporates the Complainant's trademark in its entirety. The mere addition of the words "saves lives" does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8. It is well-established practice to disregard the Top-Level part of the domain name, in this case ".com", when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established. 2) Rights or Legitimate Interests The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden of production of evidence will shift to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. In the present case, the Complainant has asserted registration and use of the registered trademark GEICO well before the Respondent's registration of the disputed domain name on August 17, 2022. The Complainant has confirmed that it has no business relationship with the Respondent. There is no explanation on the record as to why it was necessary for the Respondent to adopt the word "geico" in the disputed domain name. There is also no evidence before the Panel to suggest that the Respondent is commonly known as "geicosaveslives". page 5 There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent. The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. 3). Registered and Used in Bad Faith The Complainant's GEICO mark has been extensively used in the insurance field for a very long time. Further, the word "geico", formed by a combination of the first syllable(s) of the words comprising the Complainant's full name of "Government Employees Insurance Company" is an invented word and is very distinctive. There is no reason for the Respondent to choose and include the word "geico" in its entirety as part of the disputed domain name. This further demonstrates the Respondent's knowledge of the Complainant and its mark GEICO at the time of registration of the disputed domain name. The Complainant has clearly stated that it has not authorized the Respondent to use its mark GEICO or use it to register any domain name. The website to which the disputed domain name resolves hosts pay-per-click hyperlinks to competitive insurance-related websites offering the same services or services of the same nature as the Complainant. The Respondent is not using the disputed domain name for a purpose other than for commercial gain, and such use disrupts the business of the Complainant. It is the Complainant's contention that the use of the website to which the disputed domain name resolves will attract Internet users and consumers looking for the Complainant's services and harms its business. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the said website. The Panel finds that paragraph 4(b)(iv) of the Policy has been met. The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraphs 4(a)(iii) and (iv) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant. /C. K. Kwong/ C. K. Kwong Sole Panelist Date: October 25, 2022
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